Library: 2020 Spring Meeting
In This Section
Adventures in Patent Drafting: Making Your Crystal Ball Work for You!
May 4th, 2020
2020 Spring Meeting
(1) Administrative Law for the Patent Prosecutor: Effectively Using an Underutilized Tool; (2) Revisiting §102 after Helsinn: An Update on Caselaw and Real-World Issues of Prior Art Including Public Use and Sale; (3) Is It Time to Embrace the Problem- Solution Approach When Drafting Patent Applications with an Aim of Obtaining Protection in Multiple Jurisdictions?; and (4) Should You Change How You Draft A pplications in View of USPTO’s New Emphasis on §112 and Recent Case Law? This Presentation will Focus on Functional Claiming, Written Description, and other §112 Topics.
- Moderator — Scott Chapple, Novartis Pharmaceuticals Corporation, Fort Worth, TX
- Administrative Law for the Patent Prosecutor: Effectively Using an Underutilized Tool — David Boundy, Proper Orange, LLC, Cambridge MA
- Revisiting §102 after Helsinn: An Update on Caselaw and Real-World Issues of Prior Art Including Public Use and Sale — Laura Arneson, Mueting, Raasch & Gebhardt, PA, Minneapolis, MN
- Is It Time to Embrace the ProblemSolution Approach When Drafting Patent Applications with an Aim of Obtaining Protection in Multiple Jurisdictions? — Yelena Morozova, Finnegan Henderson Farabow Garrett & Dunner, LLP, London, United Kingdom
- Should You Change How You Draft A pplications in View of USPTO’s New Emphasis on §112 and Recent Case Law? This Presentation will Focus on Functional Claiming, Written Description, and other §112 Topics — Theresa Stadheim, Schwegman Lundberg & Woessner, PA, Minneapolis, MN
Sections 101 and 112: Increased Interplay and Overlap?
May 4th, 2020
2020 Spring Meeting
(1) Overview of How 101 Has Been Applied in Each Art Area: Compare and Contrast; (2) Interplay of 101 and 112 in Electrical and Software Arts – Weighing the Level of Disclosure Required for Software and Electrical Claims; and (3) Interplay of 101 and 112 in Biotechnology.
- Overview of How 101 Has Been Applied in Each Art Area: Compare and Contrast — Hope Shimabuku, Director of the Texas Regional United States Patent and Trademark Office, Dallas, TX (Invited)
- Interplay of 101 and 112 in Electrical and Software Arts – Weighing the Level of Disclosure Required for Software and Electrical Claims — Laleh Jalali, Alliance IP, LLC, Phoenix, AZ
- Interplay of 101 and 112 in Biotechnology — Tara Nealey, Polsinelli, PC, St. Louis, MO
Practice Tips and Procedural Developments at the PTAB
May 5th, 2020
2020 Spring Meeting
(1) So the Federal Circuit Remanded Your Case Back to the PTAB: Issues Remanded for Further Consideration; (2) PTAB Opinions on Discretionary Institution; (3) What You Need to Know about Recent Changes in AIA Trial Proceedings; and (4) Winning Strategies on What to Argue before the PTAB.
- Moderator — Prati Khanduri, Sterne Kessler Goldstein & Fox, Washington, DC
- So the Federal Circuit Remanded Your Case Back to the PTAB: Issues Remanded for Further Consideration — Bridget Smith, Lowenstein & Weatherwax, LLP, Los Angeles, CA
- PTAB Opinions on Discretionary Institution — Rob Lytle, Microsoft Corporation, Redmond, WA
- What You Need to Know about Recent Changes in AIA Trial Proceedings — Scott McKeown, Ropes & Gray, LLP, Washington, DC
- Winning Strategies on What to Argue before the PTAB — Naveen Modi, Paul Hastings, LLP, Washington, DC
Everything You Wanted to Know about Litigation Funding But Were Afraid to Ask: Exploring the Pros and Cons and the Special Features of Litigation Funding Agreements
May 5th, 2020
2020 Spring Meeting
Panel Discussion on Litigation Funding Agreements.
- Moderator — Jim Shead, CommScope, Austin, TX copy
- Panel — Adam Gill, GLS Capital, Chicago, IL, Nicole D. Galli, Law Offices of ND Galli, LLC, J. Scott Humphrey, Benesch, Friedlander, Coplan and Aronoff LLP, Chicago, IL
Who is Going to the Supreme Court? Part 1
May 6th, 2020
2020 Spring Meeting
(1) Can You Get Your Infringer’s Lost Profits? Romag Fasteners, Inc. v. Fossil, Inc.: The Supreme Court’s Resolution of the LongTime Circuit Split on Whether Willfulness is Required to Recover Profits from Infringement; and (2) Playing with Fire: Using Your Competitor’s Trademark and the Nominative Fair Use Defense: Sorting Through the Different Standards and Burdens for Applied by the Ninth, Third, Second Circuits.
- Moderator — Allison McDade, 7-Eleven, Inc., Dallas, TX
- Can You Get Your Infringer’s Lost Profits? Romag Fasteners, Inc. v. Fossil, Inc.: The Supreme Court’s Resolution of the LongTime Circuit Split on Whether Willfulness is Required to Recover Profits from Infringement — Angela Sujek, Honigman, Ann Arbor, MI
- Playing with Fire: Using Your Competitor’s Trademark and the Nominative Fair Use Defense: Sorting Through the Different Standards and Burdens for Applied by the Ninth, Third, Second Circuits — Steve Baird, Greenberg Traurig, LLP, Minneapolis, MN
Who is Going to the Supreme Court? Part 2
May 6th, 2020
2020 Spring Meeting
(1) Lost or Found? The Different Standards for Proving Abandonment: The Circuit Split Over Burdens of Proof and Persuasion; and (2) Non-Functional Requirement for Trade Dress: Does Your Circuit Allow Evidence of Alternative Design?.
- Moderator — Allison McDade, 7-Eleven, Inc., Dallas, TX
- Lost or Found? The Different Standards for Proving Abandonment: The Circuit Split Over Burdens of Proof and Persuasion — Wendi Sloane, Barack Ferrazzano Kirschbaum & Nagelberg, LLP, Chicago, IL
- Non-Functional Requirement for Trade Dress: Does Your Circuit Allow Evidence of Alternative Design? — James Aquilina, Quarles & Brady, Washington, DC
Medical Devices: Intellectual Property and Cybersecurity and Privacy, Oh My!
May 7th, 2020
2020 Spring Meeting
(1) Mitigating the Cybersecurity Threats of Connected Medical Devices; and (2) FDA Regulation of Software as a Medical Device & Medical Device Cybersecurity.
- Moderator — Frank Gerratana, Fish & Richardson, Boston, MA
- Panel — Paul S. Rosenblatt, Butler Snow, LLP, Ridgeland, MS, Melissa B. Runsten, Debevoise & Plimpton, LLP, Washington, DC, Patrick C. Gallagher, Duane Morris, LLP, Boca Raton, FL, Shiv Reddy,, Zoll Medical Corporation, Lexington, MA
Best Practices for Corporate IP Lawyers
May 8th, 2020
2020 Spring Meeting
(1) IP Lawyers are from Mars and Corporate Lawyers are from Venus: Strategies for Building Strong and Productive Partnerships; (2) Are you Ready for War? Bulletproofing Your Corporate Policies for IP Discovery and Trials (Both from Plaintiff and Defendant Perspectives; Include Trade Secret Theft Proof); and (3) Getting the Feds Involved -- Identifying and Working with Agencies and Staff Standing Ready to Help Protect IP.
- Moderator — Laurie Young, Katun Corporation, Bloomington, MN
- IP Lawyers are from Mars and Corporate Lawyers are from Venus: Strategies for Building Strong and Productive Partnerships — Ozz Siddiq, Lennox International, Richardson, TX
- Are you Ready for War? Bulletproofing Your Corporate Policies for IP Discovery and Trials (Both from Plaintiff and Defendant Perspectives; Include Trade Secret Theft Proof) — Terry Clark, Bass Berry & Sims, PLC, Washington, DC
- Getting the Feds Involved -- Identifying and Working with Agencies and Staff Standing Ready to Help Protect IP — Alex Bamiagis, United States Customs and Border Protection, Washington, DC
A Deeper Dive on the Administrative Procedures Act: How the USPTO Uses It and What That Means For the IP Community
May 8th, 2020
2020 Spring Meeting
(1) Moderator: Introductions and Background on the USPTO’s Use of Administrative Flexibilities; (2) Balancing the Appeals and Petitions Processes: Potentials, Limits, and Minefields; and (3) Obtaining Judicial Review Under the APA: Promises and Pitfalls.
- Moderator: Introductions and Background on the USPTO’s Use of Administrative Flexibilities — Brian R. Stanton, Stanton Consulting Services, LLC, Alachua, FL
- Balancing the Appeals and Petitions Processes: Potentials, Limits, and Minefields — Paul Kitch, Greer Burns & Crain, Chicago, IL
- Obtaining Judicial Review Under the APA: Promises and Pitfalls — Andrew M. Grossman, Baker Hostetler, Washington, DC
Emerging IP Abroad: Approaches to Protecting Computer Functionality and Designs Outside the US
May 11th, 2020
2020 Spring Meeting
(1) Fasten Your Seatbelts! Prosecuting Design Patents in a Fast-Changing World: When Not to File a Utility Patent, Balancing Design Patents and Copyright on Fast Developing Technologies in China, Europe and Japan; and (2) Patent Eligibility for Computer Functions: A Comprehensive Look at Computer Simulation Before the Expanded Board of Appeals and Insights Into Approaches For Canada, China, the EPO and the UK.
- Moderator — Prof. Karen M. Landolt, UT Austin McCombs School of Business, Austin, TX
- Fasten Your Seatbelts! Prosecuting Design Patents in a Fast-Changing World: When Not to File a Utility Patent, Balancing Design Patents and Copyright on Fast Developing Technologies in China, Europe and Japan — Akihiko Okuno, SK IP Law Firm, Tokyo, Japan
- Patent Eligibility for Computer Functions: A Comprehensive Look at Computer Simulation Before the Expanded Board of Appeals and Insights Into Approaches For Canada, China, The EPO and the UK — Christian Heine, KEENWAY, Düsseldorf, Germany
Subject Matter Eligibility Developments
May 11th, 2020
2020 Spring Meeting
(1) Latest Tips for Eligible Subject Matter Drafting: Best Practices and Special Issues for AI, Computer and Biotech Industries; (2) Judge or Jury: Who Will Resolve Eligibility and How?; and (3) A Deep Dive on How the Federal Circuit is Handling Eligibility Cases: What Patent Litigators and Prosecutors Need to Know, Including the Seeming Split Between Taranto and Moore Opinions.
- Moderator — Michele Connors, Cirrus Logic, Inc., Austin, TX
- Latest Tips for Eligible Subject Matter Drafting: Best Practices and Special Issues for AI, Computer and Biotech Industries — Erica Bruno, Steinfl+Bruno, LLP, Pasadena, CA, James Stein, Lee & Hayes, Atlanta, GA
- Judge or Jury: Who Will Resolve Eligibility and How? — Ellisen Shelton Turner, Kirkland & Ellis, LLP, Los Angeles, CA
- A Deep Dive on How the Federal Circuit is Handling Eligibility Cases: What Patent Litigators and Prosecutors Need to Know, Including the Seeming Split Between Taranto and Moore Opinions — Jeffrey Lewis, Norton Rose Fulbright US LLP, New York, NY
Innovation, Challenges, and the Importance of Women in STEM
May 11th, 2020
2020 Spring Meeting
Luncheon Keynote Speach by Jennifer B. Wuamett, General Counsel and Secretary to the Board of NXP Semiconductors, Austin, TX.
- Moderator — Barbara A. Fiacco, AIPLA President, Foley Hoag, Boston, MA
- Keynote Speaker — Jennifer B. Wuamett, General Counsel and Secretary to the Board of NXP Semiconductors, Austin, TX
Current Issues in Copyright Protection
May 12th, 2020
2020 Spring Meeting
(1) Copyright Liability for Websites Posting Third-Party Listings: What’s Volition Got to Do With It?; and (2) Doo Doo Do They Have Rights in “Baby Shark”?: New Frontiers in Music and Dance Copyright Protection, Infringement and Monetization.
- Moderator — Lynda Zadra-Symes, Partner, Knobbe Martens
- Doo Doo Do They Have Rights in “Baby Shark”?: New Frontiers in Music and Dance Copyright Protection, Infringement and Monetization — Julie Albert, Baker Botts, New York, NY
- Copyright Liability for Websites Posting Third-Party Listings: What’s Volition Got to Do With It? — Kate Swint, Pirkey Barber, PLLC, Austin, TX
Downstream Impacts of Licensing
May 12th, 2020
2020 Spring Meeting
(1) Downstream Impacts of Licensing; and (2) Licensing: University of Texas during COVID-19.
- Moderator — Camille Ciesliga, MaxCyte Intellectual Property Counsel, Gaithersburg, MD
- Downstream Impacts of Licensing — Karthika Perumal, Womble Bond Dickinson (US) LLP, Houston, TX
- Licensing: University of Texas during COVID-19 — Dave Palmer, Program Director, Intellectual Property & Technology Transactions, University of Texas at Austin
Roadmaps to the Intertwined IP and Regulatory Regimes in China
May 13th, 2020
2020 Spring Meeting
(1) Developments in Pharmaceutical IP and Regulatory Coordination Efforts to Stimulate Faster and Better Pharmaceutical Development in China; and (2) Using Patent Law and Policy for Incentivizing Green Technology Innovation in China.
- Moderator — Jeremy K. McKown, Johnson & Johnson, New Brunswick, NJ
- Developments in Pharmaceutical IP and Regulatory Coordination Efforts to Stimulate Faster and Better Pharmaceutical Development in China — Juhua Luo, CCPIT Patent and Trademark Law Office, Beijing, China
- Using Patent Law and Policy for Incentivizing Green Technology Innovation in China — Wen Cao, Principal of Shanghai Office of NTD, Shanghai, China
Maintaining Secrecy In An Ever Interconnected World
May 13th, 2020
2020 Spring Meeting
(1) Keeping Secrets “Secret” in a Smart Phone World: Managing Trade Secrets, Privilege and Other Confidential Information in a Connected World; (2) To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets with Them; and (3) Avoiding the Law Firm Data Breach: Ensuring You Are Not the Weakest Link and Meeting Your Ethical Duties Under ABA Opinion 477.
- Moderator — Kirby Drake, Klemchuk, LLP, Dallas, TX
- Keeping Secrets “Secret” in a Smart Phone World: Managing Trade Secrets, Privilege and Other Confidential Information in a Connected World — Kalpana Srinivasan, Susman Godfrey, LLP, Los Angeles, CA, Max Tribble, Susman Godfrey, LLP, Houston, TX
- To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets with Them — Phillip T. Petti, USG Corporation, Chicago, IL
- Avoiding the Law Firm Data Breach: Ensuring You Are Not the Weakest Link and Meeting Your Ethical Duties Under ABA Opinion 477 — Justin Freeman, Winstead, PC, Austin, TX
International Deal Making: IP Considerations for a Global Supply Chain
May 14th, 2020
2020 Spring Meeting
(1) IP Due Diligence Considerations - Indian Perspective; (2) Deal Making Considerations in the “Start-Up Nation”; and (3) What to Consider When Conducting IP Due Diligence in Mexico.
- Moderator — Jonathan Harris, Axinn Veltrop & Harkrider, LLP, Hartford, CT
- IP Due Diligence Considerations - Indian Perspective — Divyendu Verma, Krishna & Saurastri Associates, LLP, Mumbai, India
- Deal Making Considerations in the “Start-Up Nation” — Steve Kronengold, SRK Law Offices, Rehovot, Israel
- What to consider when conducting an IP Due Diligence in Mexico — Rafael Heres, Legarreta y Asociados, SC, Mexico City, Mexico
Moving Away from Scorched Earth Litigation: Strategies for Cost-Conscious Representation
May 14th, 2020
2020 Spring Meeting
(1) Small Case Strategies that Worked; and (2) Weathering the Storm: Best Practices for Counsel Representing Small Inventors and NPEs Against the Giants.
- Moderator — Jim Shead, CommScope, Austin, TX
- Small Case Strategies that Worked — Robert Greenspoon, Flachsbart & Greenspoon, LLC, Chicago, IL
- Weathering the Storm: Best Practices for Counsel Representing Small Inventors and NPEs Against the Giants — Leisa Talbert Peschel, Jackson Walker, Houston, TX
Mid-Year in Review
May 15th, 2020
2020 Spring Meeting
(1) Trademarks; (2) Patents; (3) Trade Secrets; and (4) Copyrights.
- Trademarks — Purvi Patel Albers, Haynes Boone, LLP, Dallas, TX
- Patents — Saurabh Vishnubhakat, Texas A&M University School of Law, Fort Worth, TX
- Trade Secrets — Rudy Fink, McKool Smith, Dallas, TX
- Copyrights — Naomi Gray, Shades of Gray Law Group, PC, Mill Valley, CA
Ethics: Show Me the Money! Balancing Fixed Fee, Contingency and Hourly Arrangements to Ensure Quality and Efficiency and Still Meet Your Ethical Duties
May 15th, 2020
2020 Spring Meeting
Fee Arrangements and Ethical Fee Contracting with Clients.
- Fee Arrangements and Ethical Fee Contracting with Clients — Chris Larus, Robins Kaplan, Minneapolis, MN, James M. McCormack, Law Offices of James M. McCormack, Austin, TX